Appeal 2006-2640
Application 10/364,657
modification obvious unless the prior art suggested the desirability of the
modification.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784-85 (Fed. Cir. 1992).
This is also the case with the teachings of Mantelet. The reference
teaches that the loaf of crustless bread is positioned between parallel fins or
webs and the multiblade tool cuts the stationary loaf from top to bottom. The
Examiner does not explain how this teaching corresponds to or suggests
“slicing . . . by moving the loaf transversely past a plurality of blades” as
claimed.
In the absence of an explanation or evidence establishing a suggestion
or motivation to modify the teachings of Duke and of Mantelet, the
Examiner has not established a prima facie case of obviousness. See
generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed.
Cir. 1998) (“hindsight” is inferred when the specific understanding or
principal within the knowledge of one of ordinary skill in the art leading to
the modification of the prior art in order to arrive at appellant’s claimed
invention has not been explained); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested
to one of ordinary skill in the art that [the claimed process] should be carried
out and would have a reasonable likelihood of success, viewed in the light of
the prior art. [Citations omitted] Both the suggestion and the expectation of
success must be founded in the prior art, not in the applicant’s disclosure.”).
Accordingly, we reverse the grounds of rejection under
35 U.S.C. § 103(a) advanced on appeal.
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